The Complainant is Carrefour of Boulogne-Billancourt, France, represented by Dreyfus & associés, France.
The Respondent is Contact Privacy Inc. Customer 0151451752 of Toronto, Ontario, Canada / Lucas Montanaro of Paris, France. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 7, 2018. On September 7, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 7, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 11, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 13, 2018.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 18, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 8, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default October 10, 2018.
The Center appointed Isabelle Leroux as the sole panelist in this matter on October 25, 2018. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant is an international retailer that operates nearly 12,300 stores and e-commerce sites in more than 30 countries. The Complainant welcomes 1.3 million customers a day around the world across its websites.
The Complainant owns numerous trademark registrations in France and other jurisdictions around the world, and in particular:
- French trademark CARREFOUR No. 1487174, registered on September 2, 1988, duly renewed, designating goods and services in classes 35 to 42;
- European Union trademark CARREFOUR No. 005178371, registered on August 30, 2007, duly renewed, designating goods and services in classes 9, 35 and 38;
- International trademark CARREFOUR No. 1010661, registered on April 16, 2009, designating services in class 35;
- International trademark CARREFOUR No. 351147, registered on October 2, 1968, duly renewed, designating goods in classes 1 to 34.
In addition, the Complainant and affiliates own, among others, the following domain names:
- registered on October 25, 1995; and
- registered on June 23, 2005.
The Respondent is an individual located in Paris France. The disputed domain name was registered on May 4, 2018, through a privacy service company located in Canada.
The disputed domain name is active and resolves to a parking page with sponsored links related to retail, banking services and customer-service activities. 5. Parties’ Contentions A. Complainant
(i) The Complainant contends that the disputed domain name is identical or confusingly similar to the trademark registrations of the Complainant, since the disputed domain name reproduces identically the CARREFOUR trademark in which the Complainant has rights.
The Complainant further submits that the addition of the French phrase “espace client”, meaning “customer area”, would not prevent the risk of confusion, and that the extension “.com” should not to be taken into consideration.
(ii) The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant submits that the Respondent is not affiliated with the Complainant nor authorized or licensed by the Complainant to use its trademarks.
Besides, the Complainant contends that the Respondent does not make any use of the disputed domain name in connection with a bona fide offering of goods or services, since the disputed domain name resolves to a parking page displaying commercial links.
The Complainant also contends that the use of a privacy shield service to hide his identity and lack of response to the Complainant’s pre-complaint letters are additional proof of the Respondent’s lack of rights or legitimate interests in the disputed domain name.
(iii) The Complainant contends that the disputed domain name was registered in bad faith. The Complainant submits that its trademarks are well known throughout the world and the Respondent knew or should have known the existence of the Complainant’s rights. The use of a privacy shield service to hide the real identity, according to the Complainant, is also an indication of the Respondent’s bad faith in registering the disputed domain name.
The Complainant submits that the disputed domain name is being used in bad faith, in particular, by setting an email server, incorporating the Complainant’s trademark, on the disputed domain name “[...]@” that could be used to deceive consumers into revealing personal and financial information. The Respondent is likely to be engaged in a phishing scheme through which the Respondent could capitalize on or otherwise take advantage of the Complainant’s trademark rights.
(iv) The Complainant requests that the disputed domain name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Procedural Aspects
The Panel notes that the Respondent is formally in default pursuant to paragraphs 5(f) and 14(a) of the Rules because no response was received from the Respondent within the time limit set by the Policy and the Rules.
However, the Panel finds that this does not mean that the remedies requested should automatically be awarded. The Panel will have to establish whether the Complainant’s prima facie case meets the requirements of paragraph 4(a) of the Policy, as follows:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
These elements will be examined in turn below. 6.2 Requirements of paragraph 4(a) of the Policy A. Identical or Confusingly Similar
The Complainant provided evidence that it has rights in CARREFOUR trademarks, well before the Respondent registered the disputed domain name. This satisfies the Panel that the Complainant has registered trademark rights in the CARREFOUR marks for the purposes of the Policy.
According to Section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the applicable generic Top Level Domain (“gTLD”) in a domain name (e.g., “.com”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.
In this case, the Panel finds that the “.com” gTLD in the disputed domain name shall be disregarded for the assessment under the first element.
The relevant part shall therefore be “carrefourespaceclient” composed of the term “carrefour” which is the exact reproduction of the Complainant’s trademark CARREFOUR and the additional suffix “espaceclient” which is a descriptive term in French meaning “customer area” or “client’s space”.
Previous UDRP panels have found that where the relevant trademark is recognizable within the disputed domain name, the addition of descriptive terms would not prevent a finding of confusing similarity under the first element, especially for the suffix “espaceclient”. See Credit Industriel et Commercial S.A. v. Zabor Mok,WIPO Case No. D2015-1432, and France Telecom v. Richard J.,WIPO Case No. D2006-0807, .
For the above reasons, the Panel finds that the addition of “espaceclient” to the trademark CARREFOUR does not prevent a finding of confusing similarity.
Thus, the Panel finds that the disputed domain name is confusingly similar to the trademark CARREFOUR in which the Complainant has rights, and the requirements under paragraph 4(a)(i) of the Policy are satisfied. B. Rights or Legitimate Interests
The Complainant submits that the Respondent has not been authorized by the Complainant to use its trademarks and that there is no business relationship existing between the Complainant and the Respondent.
In addition, the disputed domain name is not used in connection with a bona fide offering of goods or services and no legitimate noncommercial or fair use is made of the disputed domain name.
Indeed, the Complainant provided evidence that the website associated to the disputed domain name resolves to a parking website displaying numerous commercial links related to the Complainant’s field of activities such as banking services and customer services.
Accordingly, the Complainant has established a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name.
Since the Respondent has not replied to the Complaint and, thus, has not presented any other evidence or elements to justify any rights or legitimate interests in connection with the disputed domain name, the Panel finds no indication that any of the circumstances described in paragraph 4(c) of the Policy could apply to the present matter.
Therefore, given the circumstances described above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name and thus the requirement under paragraph 4(a)(ii) of the Policy is met. C. Registered and Used in Bad Faith
It has been proven to the Panel’s satisfaction that the Complainant’s trademarks are well known in France and all around the world, and the Panel accepts that the Respondent, whose alleged address is in France, could not reasonably ignore the Complainant’s trademarks and activities.
Previous UDRP panels have regularly ruled that bad faith was found where a domain name is so obviously connected with a well-known trademark that its very use by someone with no connection to the trademark suggests opportunistic bad faith. See LEGO Juris A/S v. store24hour,WIPO Case No. D2013-0091 and Carrefour v. Jean-Claude Bot / Albert Pierre,WIPO Case No. D2017-0969.
The above elements indicate that the disputed domain name has been registered in bad faith.
In addition, the Complainant argues that the fact that the disputed domain name was registered through a privacy service company is another evidence of bad faith use.
According to the Section 3.6 of the WIPO Overview 3.0, the use of a privacy service is not per se an indication of bad faith. However, the manner in which such service is used can in certain circumstances constitute a factor indicating bad faith, especially where it appears that a respondent employs a privacy service merely to avoid being notified of a UDRP proceeding. See WhatsApp, Inc. v. Whois Agent, Whois Privacy Protection Service, Inc. / Mohammed Alkalbani, Ops Alkalbani, M. Rashid Alkalbani,WIPO Case No. D2016-2299 and LEGO Juris A/S v. Whois Privacy Protection Service, Inc. / Domains Secured, LLC,WIPO Case No. D2011-1857.
The Panel therefore accepts that the use of privacy service constitutes an inference of bad faith registration and use of the disputed domain name.
Finally, in accordance with the evidence submitted with the Complaint, an email server has been configured on the disputed domain name. The Panel concurs with the Complainant that the connection of the disputed domain name with an email server configuration enhances a likelihood of confusion and presents a risk that the Respondent is engaged in a phishing scheme. Indeed, the term “espace client” is an expression commonly used to designate a space reserved for the clients of a company. The association of such term with the Complainant’s trademark will create a risk of confusion that the disputed domain name would be perceived as referring to customer services of the Complainant.
As established in previous UDRP decisions, such behavior is manifestly considered evidence of bad faith, since a phishing scheme can be detrimental not only to the company whose goodwill has been taken advantage of, but to customers who may entrust what appears to be the Complainant with sensitive information such as credit card details. See, Carrefour v. WhoisGuard, Inc., WhoisGuard Protected / Robert Jurek, Katrin Kafut, Purchasing clerk, Starship Tapes & Records,WIPO Case No. D2017-2533 and Carrefour v. Eliza Maria,WIPO Case No. D2017-2520.
Accordingly, this Panel finds that the intention of the Respondent to take undue advantage of the Complainant’s trademark rights has been demonstrated.
In the absence of a response, the Respondent offered no information on the intention of such use. The Panel therefore finds that the presence of links to third-party websites on the website at the disputed domain name could be considered as another indication of bad faith use.
For the above reasons, the Panel finds the Respondent registered and is using the disputed domain name in bad faith, and thus the condition of paragraph 4(a)(iii) of the Policy has been satisfied. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, be transferred to the Complainant.
Isabelle Leroux
Sole Panelist
Date: November 8, 2018
Full & Egal Universal Law Academy